EP 3 076 804 B1 relates to a heated aerosol generating article with thermal spreading wrap.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The feature at stake
Claim 1 as granted contains the feature that the material is a “gathered sheet”. All turned about the interpretation given to this feature.
The proprietor argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel.
The opponent argued that if “gathered sheet” is interpreted in the light of the description, then it would have a broader, although still technically sensible meaning. This interpretation of “gathered sheet” would lead to a lack of novelty.
The need for a referral
In view of the need of interpreting the claim, in T 439/22, the board referred 3 questions to the EBA.
Question 1
Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
Question 2
May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
Question 3
May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Diverging case law in respect of Question 1
The referring board identified diverging lines of case law.
One line of case law took Art 69 and Article 1 of the Protocol as the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52-57.
Another line of case law took Art 84 as the basis.
A further line of case law which was not explicit as to which article of the EPC was the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52 to 57.
Diverging case law in respect of Question 2
One line of case law was that a board only consulted the description and drawings when interpreting the claims to assess patentability if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation.
A further line of case law was that a board always consulted the description and drawings when interpreting the claims to assess patentability.
The EBA’s decision
Admissibility
The EBA considered questions 1 and 2 as being admissible.
For the EBA, question 3 was not admissible. Question 3 is considered by the EBA to be encompassed within Question 2, hence an answer to Question 3 is not necessary for the Referring Board to reach a decision in the case before it.
The reasons for the decision
For the EBA, Question 1 concerns the legal basis in the EPC for carrying out this interpretation. As explained above, either Art 69 and Article 1 of the Protocol or Art 84 have been used as basis.
The EBA reminded that G 2/88, G 6/88 relied on Art 69 and the Protocol, and G 2/12, relied on Art 84 as the respective legal basis.
The EBA considered that neither Art 69 and Article 1 of the Protocol, nor Art 84 are entirely satisfactory as a basis for claim interpretation when assessing patentability.
Art 69 and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Art 69 and the Protocol, the drafting history of these provisions, and from their position in the EPC.
Using Art 84 as an alternative basis for interpretation of the claims can also be criticised. Art 84 addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose, cf. see T 1473/19 Reasons 3.8.
The EBA thus considered that there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be “No”.
However, in order to give some guidance, the EBA added that whether Art 69 or Art 84 is taken as the basis for claim interpretation does not appear to affect the principles that are applied.
In general terms, what the boards have done is apply the wording of these articles in an analogous way to the examination of patentability under Art 52 to 57. There is thus an existing body of case law from which the applicable principles of claim interpretation can be extracted. The EBA referred to the extensive discussion of how the boards have interpreted patent claims when assessing patentability in the referring decision and quoted T 2684/17 Reasons 2.1.4 and T 1871/09 Reason 3.1), Reason 3.3.3, and in particular T 1473/19 Reasons 3.1 to 3.15 and 3.16 to 3.16.2), and Reason 3.3.4.
From this case law the following principles of claim interpretation can be extracted:
1) The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA, in adopting the above position, is thus rejecting the case law of the boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. This is the issue raised in Question 2.
The diverging case law where the description is referred to only in cases of unclarity or ambiguity, is contrary to the wording, and hence the principles, of Art 69. It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC.
The BA found it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the EBA agreed with the harmonisation philosophy behind the EPC, cf. G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2.
The EBA noted that finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act.
The EBA thus answers Question 2 as follows: the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA noted that the current case law of the UPC, as exemplified in Headnote 2 of the order of the CoA UPC UPC_CoA_335/2023-APL_576355/2023 : NanoString Technologies -v- 10x Genomics, of 26.02.2024 as rectified by the order of 11.03.2024, appears to be consistent with the above conclusions.
The above considerations highlight the importance of the ED carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art 84. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO.
The order
In the light of the above, the EBA answered the referred Questions 1 and 2 as follows:
The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Art 52 to 57, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Comments
G 1/24 is one of the shortest decisions, if not the shortest, of the EBA.
It is a very summary decision that does nothing to solve the problems. It says nothing much concrete and has not decided wheter Art 69 and Art 1 of the Proptocol have to be taken into account. On the face of it, the EBA considers that Art 69 should in principle apply, although the EBA says clearly that the reply to Question 1 should have been NO.
On the other hand, the EBA has not given the faintest guidance what it means under “always consulting the description and the drawings”.
What does it mean the description has to be “consulted”. Merely reading the description can be considered as “consulting” the description. So what
If neither Art 69 and the Protocol nor Art 84 are a proper legal basis, what then is the proper legal basis of the rather apodictic statement of the EBA? In G 1/24, the EBA has not helped to interpret the EPC, as it does not even refer to it.
Art 84 is by no means purely formal, as it appears to be difficult to assess N and IS of an unclear claim. It can be agreed with the EBA, that if a claim is unclear, it ought to be amended.
When we see the divergence in interpretation by the boards of G 2/21, we can expect some difficulties in the future.
It will certainly not prevent divergent decisions between the BAs and the UPC.
As far as I’m concerned, it’s a political decision and the EBA is bowing down to the UPC.
In Hednote 2, the CoA UPC has stated that “the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim”. The EBA has merely paraphrased this statement of the UPC. This is not worthy of the EBA.
The wording used by the EBA corresponds to that of the CoA UPC.
One day we will have to decide whether the patent is its own dictionary. Angora cats might soon be marching in.
It will also force EDs and ODs to look at the description, even if no relevant prior art will have be found. I pity examiners having to exercise this task. The president might claim that this is the case, but I know for a fact that this is not absolutely correct.
The best example is the Agfa/Gucci case before the LD Hamburg, commented on this blog. We can certainly expect more Art 84 objections from first instance divisions, especially from EDs as G 3/14 has put a limit of the application of Art 84 in opposition.
In this respect, it is interesting to remember that in its submission for G 3/14, the president advocated looking at Art 84 in opposition. One could think that this was to overcome what had been missed during examination.
What about added matter
The referral was limited to the application of Art 52 to 57. As however, the test to determine whether there is added matter, is the N test, G 1/24, might thus also have an influence on the assessment of added-matter.
T 1473/19 has been commented in the present blog. The reference of the EBA to T 1473/19 leads to the conclusion that, although not part of the referral, the claims will have to be interpreted in the light of the description when dealing with Art 123(2) and not only Art 123(3).
As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.
Comments
57 replies on “G 1/24 has been issued”
Daniel, reading your comment brings to my mind the tart remark of UK politician at the time of COVID 19, that the public have heard more than enough from the experts. Here a Link:
.https://www.spectator.co.uk/article/fact-check-what-did-michael-gove-actually-say-about-experts/
We are living through a period in which a large number of influential people are contending that over the past few decades “we have heard more than enough” on patentability from the experts at the EPO and that the time has come for those higher up, with a more expansive view, to take charge.
A lot of people stand to make a lot more money, the more complicated patent disputes get, in Europe, from now on.
The Decision in G1/24 in my opinion, does little more than kick the can down the road a bit further. Can we expect more from the Referral on whether the description has to be conformed. After all, in the USA it isn’t and yet they argue over there that every claim duly issued by the USPTO has definitely been examined rigorously for its clarity and whether it is “supported” by the decription.
Dear Max Drei,
Further to your comment on the experts, I could ad a French say: in the kingdom of the blind, the one-eyed are king. I leave you to decide who belongs to the blind and who to the one-eyed.
I have my idea: the politicians were lulled into the UPCA, and the one eyed, had sufficient vision towards their purse, so they have established a system with the aim how getting even more money into already very deep pockets. You top this with extremely short procedural delays, and the slot machine is working full pelt.
I hope that the referral on the adaptation of the description will bring more, as it does not appear tolerable that on the one hand, a claim is apparently limited, but the description allows a much broader interpretation, and on the other hand, a claim is rather broad but has to be interpreted narrowly in view of what is written in the description. Some coherence has to be brought in, if we do not want havoc in the patent world. But as you say, havoc can be beneficial for some happy few.
If this I want some want, then let’s go back to the old French system without an claims. At those times, the patentee discovered its patent on the day of infringement….
“As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.”
This decision does nothing to put “directly and unambiguously derivable” in danger. The equivalent test in the UK is:
(1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application;
(2) to do the same in respect of the patent as granted;
(3) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
The EPO simply needs to do the same. It merely requires them to consider the document as a whole rather than to ignore all context. This might make it harder for the EPO to revoke patents on minor technicalities, but that can only be a good thing.
@ Intrigued,
I would like to draw your attention to the fact that we are not in the UK. Why should the EPO do the same as the UK or the German Federal Court.
In G 1/24, the EBA has come up with a statement which tries to satisfy the need of harmonisation with the UPC, however without explaining how this ought to be done.
Considering a document as a whole rather than to ignoring all context is meaningless as meaningless can be. It cannot be that a claim says A and the description says the contrary or tries to push the boundaries of A even going as far as B. Whether you like it or not, I call this cheating.
When the boards revoke patents which should never have been granted, it is helping the public, and it is good so.
It is to be hoped that the EPO will give enough time to its examiners to do a proper job as claimed by the president. Otherwise, why bother with examination. Then resort to peer review like for scientific papers, or give up the whole patent system.
I maintain that the notion of “directly and unambiguously derivable” could be in danger.
At least, when looking at the “whole document”, two interpretations are possible and one is manifestly not directly and unambiguously derivable, then we are in presence of added matter.
If two interpretations are possible without adding matter, then there is something wrong with the disclosure. For the sake of legal certainty, the applicant should then be invited to decide which one he wants and may obtain a patent for.
Otherwise you can forget the whole patent system.
I had a sliver of hope, but of course they took the path of least resistance—careful not to “muddy the waters,” as the saying goes. Taking a firmer, more consistent position would’ve required too much effort, especially with their cherished performance KPIs at stake. Once again, the same asymmetry persists: the Opponent is left to fight against the broadest possible interpretation—including equivalents—during infringement, and the narrowest, most literal construction during nullity. If a claim reads onto prior art but the description or drawings suggest something narrower, that shouldn’t be the Opponent’s problem to fix.
@ Bugs
I think you were not the only one having some hopes, and to be honest, G 1/24 is a big deception. I would be more inclined to say that the EBA is actually muddying the waters by coming up with a proposal without giving the faintest idea how this should be done.
If the EPO does not want to create and nurture Angora cats, it better gives its examiners the time necessary to do their job properly.
KPI are one thing, but when do not even know the sample size, how can you ascertain a given result? You could as well put your finger in the wind.
I do agree with you, that it is not for the opponent to do the job the EPO should do. When in less than 10% of the cases patents are revoked or maintained in limited form, then something does not seem to work properly. For instance, why does an opponent have to bring the Art 54(3) prior art, or following a search report with many X or why, it the opponent who brings the really relevant document?
Possible consequences of this decision:
1. Prior to grant, the Art 84 EPC enquiry will increase yet further in intensity, with EPO Examiners taking ever more contrived and formalistic objections and goodwill between Examiners and patent prosecutors ever more strained.
2. After grant, ie in opposition proceedings, the EPO will increasingly feel itself obliged to follow the established case law of the UPC, on how to interpret a duly issued claim.
3. Increases in harmony and legal certainty, all over Europe, with bad patents getting swiftly revoked, and good ones swiftly enforced.
Dear Max Drei,
I think as well that examiners will come up with more unnecessary Art 84 objections, but on the other hand, sooner or later the pendulum will go back in the other direction as the number of patents eventually granted will endanger the cash cow of renewal fees.
That legal certainty should be increased is a valuable aim, but when you see the result after appeal in opposition, with at best 15-20% of patents surviving an opposition without being maimed, the so much touted “early certainty” isdeflating like a balloon full of hot air.
I think the EBA could have added a remark about the abstractness of the given rule this time as well. Though the concisness of the decision (no extensive copy/paste from T decision) is certainly an improvement over G 2/21.
Dear Plu,
When you see how “varied” the boards interpret G 2/21, I fear that G 1/24 will not bring better results. I am rather pessimistic and think that the situation might get worse. If the situation gets worse at the EPO, then proprietors will be happy, but not third parties or the public at large.
May be the conciseness of the decision is simply due to the fact that the EBA itself did not know how the order should be implemented. It was then better to stay at a very general level, not to say a very vague level.
Due to the pre-eminence of technically qualified members at the TBAs, decisions of the EPO have been characterised by avoiding long discussions on the interpretation of the claims and definitions of the skilled person. All these accomplishments risk being lost. Lawyers definitely want their revenge on technicians.
I would have thought that the EBA had another role and duty than merely parroting statements of the CoA UPC.
It is a pity that the EBA has encompassed Question 3 in Question 2. For my point of view, these two questions are different, and Question 3 was the main reason for the TBA 3.2.01 to refer this question to the EBA; in other words, which definition should we take for the expression “gathered sheet”, the common meaning or the definition made in the description of the patent? This was the heart of the problem for assessing the novelty of the claim! The EBA in their decision ask to “consult” the description to interpret the claim. So, what? Anybody will consult the description and will choose the dictionary that suits him/her, i.e. the common dictionary or the description dictionary depending on his/her interest. Therefore, this tricky question is still open! I am curious to see what the TBA 3.2.01 will do for interpreting this “gathered sheet” expression in view of G1/24… As a summary, G1/24 is an unfinished decision; it is a great shame.
@ Anonymous,
I am neither convinced by the “decision”, as it looks like a decision, but is not a decision, not am I convinced at all that question 3 was not admissible. There were good reasons for the remitting board to file Question 3.
Having to “consult” the description is actually meaningless. I would think that any sensible examiner, if given time to do so, will “consult”, i.e. read the description. A representative will have to be the more careful when assessing the valadity of the patent, in view of “gems” beeing hidden in the description.
The problem whether the description is a dictionary for the claims or not has simply been evacuated by the EBA, and yet this is an important aspect which needed guidance.
I agree that G 1/24 is a badly unfinished decision, in other words, the mountain has given birth to a mouse (well-known French say).
What good is it to have claims, but the description may give definitions of claimed features which do not tie up with what a skilled person would understand under a claimed feature.
This is why that G 1/24 will receive a lot of different interpretations depending on the boards as it is the case with G 2/21.
Problem not solved, confusion increased. Do we need such an EBA?
If it wasn’t so sad, one would have to laugh. The TBA asks the EBA, do we take the ordinary meaning of “gathered”, or do we take the definition in the description. The EBA replies, go back and start again but, this time, be sure to “consult” the description.
If there were a prize awarded for the most Delphic utterance of an instance of judicial appeal, or the highest attainment of judicial economy, or the most fatuous of the year, or the one most resembling a kick of the can down the road, this so-called Decision would be in the running for it.
I had thought that it was the job of appeal instances to bring greater clarity to the law, rather than to stir the waters and make them even more muddy. But perhaps the EPO, including all the members of the EBA, is under political pressure to refrain from doing its job as clarifier of the law and instead to hand over the job to the guys on the top floor, namely the UPC.
While I wish the EBA had explicitly answered Q3, I think it could reasonably be argued that they have implicitly answered it. The decision says “the Enlarged Board considers that Question 3 is inadmissible as an answer to it is not necessary for the Referring Board to reach a decision in the case before it”.
If the answer to the first part of Q3 were “yes, a definition may be disregarded for assessing patentability”, then the Referring Board would require an answer to the second part of Q3, i.e. under what conditions may it be disregarded?
Therefore, since the EBA does not think that the Referring Board needs an answer to Q3 in view of their answer to Q2, the answer to the first part of Q3 must be “no, a definition may not be disregarded”.
Dear Daniel,
I am worried that the EBA is now ignoring the law (neither A69 nor A84 provides a sound basis to answer the referred question – but who cares after all – BTW don’t forget the recent “dynamic interpretation” of A53) to come with solutions of their own that please the most and follow the trend of the day. It’s never a good sign for democracy when judges are making the law instead of applying it.
I agree it will be interesting to see how this “no decision” is implemented at DG1 level (should the Guidelines be updated?). If more A84 objections are raised at the expense of studying the core patentability criteria – N and IS – that would be quite a pity!
Dear concerned frog,
When reading Art 22(1,a), it says “The Enlarged Board of Appeal shall be responsible for deciding on points of law referred to it by Boards of Appeal under Article 112.
I understand, and I am certainly not alone, that deciding on points of law is deciding on how to interpret the EPC. Up to recent years, the EBA did this. Starting with G 2/19, but much more with G 3/19 and then with G 1/21, we have apparently entered in the area of political decisions, which can be summarised under “dynamic interpretation” of the EPC. In the present we have no interpretation whatsoever, just the requirement to “consult” the description whatever this might mean, as in principle the reply to question 1 should be no..
In view of the production pressure on DG1, I doubt that communications and decisions will be enriched in the future with long developments on how the claims are to be interpreted, like we find in German decisions and recently in UPC decisions.
Is it not so, that the advent of the UPC “changes everything”? I mean, we can’t have a mere Patent Office interpreting claims diffferently from the way commanded by the highest appeal instance of a pan-European patents court, can we?
I presume that the members (specialists, experts, teenage scribblers, whatever you choose to call them) of the EBA have had it explained to them in no uncertain terms where their duty lies, that from now on they had better back off and be careful in their pronouncements not to stray into areas more properly the concern of the grown-ups at the UPC.
This is all plainly evident from the text of G1/24, is it not?
Dear Max Drei,
G 1/24 indeed muddles the waters much more and is one more political decision as they appeared since G 2/19, G3/19 and G 1/21.
It shows at least one thing, the BA and the EBA are not just apparently independent, they are actually not independent whatsoever. It bitterly confirms that the reform of the BA in 2016 was just smoke and mirrors. It is only the day the boards will have their own budget directly decided by the AC, and not having to go through the president, that they will begin to become independent.
I have been told once that the president of the EPO wanted simply the EPO to grant with as less interference as possible, and that the job should then be done by the UPC. I did not believe it at the time, but I am slowly wondering if this is not becoming the case.
What is the alternative? As the EBA noted, there is no clear legal basis for answering this question. Put simply, the EPC is not well-written. The drafting standards to which representatives are held in matters relating to A123 are far, far higher than the drafting standards of the authors of the EPC. A84 is not clear, A69 arguably does not apply to examination and the “invention” is not defined anywhere in the EPC, so what are we to do? The best we can do is muddle along and try to do the common sense thing that everyone else does. Anything else leads to logical issues.
@ Anonymus,
I beg to disagree that the EPC has not been well written. It was well written with the aim to come to an agreement for a European patent, in order to avoid duplication of work, and the resulting agreement was to stop at the grant of patents and leave the post grant procedure to national instances or to another supra national instance, hence the dead-borne Luxemburg conference.
The second idea was to make an open convention not merely limited to EEC/EU member states.
That it could come possibly come into conflict with the EU legal system was an accepted fact.
Without those two compromises, there would not have been any possibility to get a European patent, as some EEC/EU member states did not want it within the EEC/EU.
The rule about added matter has the advantage to be clear and in the end novelty and added matter are the two faces of the same coin. What you loose on one side you gain on the other. In other words, you cannot have your cake and eat it.
Art 84 is only unclear for those who want to see it unclear. To me it has two branches, on the one side clarity in the usual meaning, and on the other side support, which means that claims and description have to be aligned on one another. If this is the case, any angora cat can be nipped in the bud. No need to have great dissertations on what could the claim mean, on the description being its own dictionary.
May be the only positive statement in G 1/24 is that Art 69(1) was not made for examination, see the history above, and this is certainly the case for Art 1 of the Protocol. The protocol has only been drafted so that neither the lenient German approach which should prevail, nor the very strict British approach. Truth had to be somewhere in between.
For many decades, we have been happy hat an invention was not defined directly in the EPC. It was not defined either in the four draft agreements on a Community Patent which have led to the EPC. And now suddenly with the upcoming UPC all this ought to be thrown over board. Please lets remain on Earth.
You might think that the EPC is not well written, but I beg to differ. You claim that Art 84 is clear, but I would proffer the level of debate suggests it is not. It is amusing you consider that “May be the only positive statement in G 1/24 is that Art 69(1) was not made for examination”. Apparently, G 1/24 is a good decision only insofar as it agrees with you, and the EPC is well written and clear when you interpret it in the way you interpret it. That this is your analysis of G 1/24 could not have been more predictable. Reasonable minds can differ. The enlarged board was correct to say that neither Art 69 nor Art 84 is satisfactory.
You claim that for many decades, we have been happy that an invention was not defined directly in the EPC, but how can you speak for everyone? When I started my training many decades ago, I was challenged by a mentor to identify what I thought the word meant. The fact that I could not come up with a satisfactory definition for a term that is mentioned in Art 1 of the convention perhaps suggests that the convention is not as well written as you might believe. Defining your terms is an elementary part of drafting which was overlooked.
@ Anonymous of 21.06,
I never said that the EPC was not well-written.
This is your postulate not mine!
Mine is exactly the opposite.
On top of this, your last sentence contradicts your first one!
I invite to look at any patent law valid in Western Europe and to tell me in which of those the term invention is defined. To my knowledge in the former East European states, the invention was defined in the claims. This was a big difference with the EPC and it was one of the difficulties when I used to train “grand-fathers” to get at grips with the EPC when those contracting states joined the EPO.
Your mentor must have been one of those used to this old vision.
G 1/24 is not a good decision, and I maintain my view. I could have some positive side-effects, but we do not know yet. We will have to wait until we see how the boards will interpret it. I fear that the situation will be as diverging as it is the case with the application of G 2/21.
After reading the decision, I also felt that the EBA’s answers are perfectly fine on an abstract level, but remarkably unhelpful for those who seek concrete guidance. All right, we should always “consult” the description and the drawings, but what are we supposed to do next?
I do not envy the members of the referring Board, who will now have to come up with a way of implementing the EBA’s order.
Will we have further referrals to the EBA on the same topic? I do not hope so, but I am concerned that will happen eventually.
G 1/24 is as clear as G 2/21 has been.
We can expect diverging interpretations of this decision, like we have it for G 2/21.
Where is the gain?
A thought about added matter.
Art. 123(2) concerns amendments. In order to examine whether an amended feature has basis in the original application, one has to “interpret” the amended feature and “consult” the description to determine whether it has basis.
So we can draw a clear parallel to say that G1/24 also applies to added matter.
To my view, any amendment to the description may ultimately change the scope of the claims, even if it is only to acknowledge relevant prior art. So I am in favour of abolishing the practice of having to amend the description (which can be a tedious task). Let the claims define the scope of protection, with the description forming support (Art. 84 EPC) and being used to interpret the claims (Art. 69 EPC). Anything that is mentioned in the description but is outside the wording of the claims, is disclaimed. The file wrapper, being public, is evidence that shows what the patentee has argued and why amendments are made, and should thus not be ignored.
“Anything you say can and will be used against you in a court of law”
@ Stephanie Sarlet
In so far as the G 1/24 applies to Art 54, it applies, but not directly, to added matter, as it is the novelty test which is applied to determine whether there is added matter or not.
This one of the criticism I had to the referring decision. By mentioning Art 54 but not Art 123(2) it forgot an important aspect in procedures before the EPO.
It is to be hoped that G 1/24 will not be interpreted by the boards in way that the notion of “directly and unambiguously” will be watered down and become meaningless.
On the other hand, when according the description two interpretations are possible, and one offends Art 123(2) it would be logical to consider the claim as a whole offends Art 123(2).
To conclude that for fear of added matter the description should not be adapted is a step which should not follow. Adding that even prior art should not be acknowledged goes a trifle too far. In this respect, I would like to draw your attention to a very old decision: T 11/82. In headnote V, the board specified: “The mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of “subject- matter”, contrary to Article 123(2) EPC”. This decision is quoted in the Guidelines F-II, 4.3.
You might be in favour of abolishing the practice of having to amend the description, and plenty of representatives are of this opinion, but as long as the EPC is as it is, the description will have to be adapted. I would even say that G 1/24 will oblige the EPO to be very careful to what is stated in the description ifit does not want to nurture Angora cats.
I have great sympathy when you say that “Anything that is mentioned in the description but is outside the wording of the claims, is disclaimed.” The problem is that proprietors are very quick to resort to the description in order to push the scope of protection. As an example I have cited the litigation Agfa/Gucci before the LD Hamburg of the UPC.
Your statement “what is disclaimed is outside the wording of the claims” comes immediately into problems, as lots of applicants/proprietors attempt to transform the patent as its own dictionary by bringing in the description interpretations of the wording of the claim which go far beyond what is actually stated in the claim. There again, this is done in order to later end up with a lovely Angora cat.
A file wrapper estoppel would be a good way to avoid adaptation of the description, but this is a notion which is foreign to the EPC, and I do not see the EPC being revised for quite a while.
A file wrapper estoppel will also not help to avoid some applicants/proprietors trying to bring into the description notions which can be far away from what is actually claimed. Just have a look at applications stemming from the US. In quite a lot of those every sentence starts with “may”. It is easy to guess why.
Dear Daniel
In your reply to Stephanie Scarlett, whose views I share, you say that it is the “novelty test” which is applied to determine whether there is added matter or not. You seem to criticise the EBA’s decision for forgetting the implications on the the handling of added matter after it had considered the position with respect to Article 54. But the test for added matter is not the “novelty test”: it is the “direct and unambiguous test”. This test is relied upon elsewhere in EPO procedures, for example in determining claims to priority, ante-dating divisional applications, etc. Should the EBA be criticised for also forgetting to discuss these procedures also? For me, I think this is a positive decision, although I share your disappointment that the issue of adaptation of description for consistency with claims remains unresolved.
@HKJ
I beg to disagree with you as you are actually playing on words.
Art 123(2) does say the following:
The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
Case law has developed three tests to determine whether added matter is present or not.
– the original application/patent is not a reservoir of features combinable at will- Criterion I, See for instance T 1334/09, T 296/96, T 776/16 or T 1251/19.
– what is directly and unambiguously derivable from the original application/patent-Criterion II, see T 1724/08, T 1724/08, T 1955/15
– the allowability of an amendment should be beyond any reasonable doubt- Criterion III, T 299/99, T 1006/03, T 465/07, all those decisions going back to T 383/88.
There are also combinations of those criteria to be found in the case law.
The most applied criterion in indeed, Criterion II. However, when looking carefully at what it means, it does not say more than any information which is not directly and unambiguously disclosed in a document, is information which is novel over the content of said document.
Only what is directly and unambiguously derivable from a piece of prior art, can be considered when a novelty objection is raised.
The same applies when deciding on substance whether the priority is valid. Only what is directly and unambiguously derivable from the priority document is entitled in a later application to the claimed priority. Any new information in the later application does not benefit from the priority.
When looking at the wording of Art 123(2), any subject-matter which extends beyond the content of the application as filed, is added matter. This subject-matter is thus necessary new with respect to the original disclosure. Added matter and novelty are the two sides of the same coin. What is gained on one side, is lost on the other one.
The way to asses added matter began well before the golden standard “directly and unambiguously derivable” was established. This is why, I allow myself, and will continue to do so, to summarize the test for added matter by saying it is the novelty test.
That the EBA did not deal with Art 123(2) is normal, as the questions were limited to Art 52-57. It is only indirectly that there was a link with added matter.
That the EBA did not deal with the adaptation of the description is also normal, as it was not within the legal and factual framework of the referral. The president and a late amicus curiae tried to bring in the topic of the adaptation of the description, but the EBA rightly did not go along with this wish. I am thus by no way disappointed that this topic has not been dealt with by the EBA, but there is a referral in the pipeline on this topic.
I am simply of the opinion that with G 1/24, the description will have to be adapted to the claims in order to avoid any surprise in post grant procedures, and to allow the same interpretation of the claims in pre- and post-grant procedures.
While I understand the decision may leave some people disappointed or frustrated, my takeaways are positive.
I welcome the reasoning that understanding the terms of the claims is the initial step of interpretation. This looks like a given : no interpretation is possible if the meaning of the terms has not been ascertained. With this starting point, it is clearly and always necessary to look at the description and the drawings, if any, to gain understanding of the claim terms. This has always been clear anyway from Rule 43.7 EPC and its recommendation to mention the relevant reference numerals of the drawings after each term.
The reminder of the primacy of the claims implies the red line, well settled in the case law and known as the rule of the « broadest reasonable interpretation », that their interpretation cannot result in entering into a claim a limitation only disclosed in the description. This effectively restricts the way the description can be used when it is « consulted ».
The emphasis that the conditions of Article 84 deal with the claims does not support the requirement to adapt the description to remove inconsistencies between the claims as amended and the description. Nonetheless, this does not exclude that a requirement for adaptation may be justified, provided the inconsistency is shown to cast doubt on the meaning of claim terms, as laid out in the 2024 revision of the Guidelines.
The language « consulted » is broad. When looking at question 3 of the referral, i.e. whether the patent can be its own dictionary, which the EBA has held inadmissible, this broad language avoids a binary, dogmatic Yes or No approach. It allows a relevant definition of the description to be assessed on a case-by-case basis in order to find out if the applicant, by a authoritative wording, has unmistakably asserted that this definition be the one to be taken into account.
Much to agree with, Francis Hagel, but I have to say that I groan inwardly when I read “case-by-case basis”.
With claim interpretation being a matter of law not fact, every case will have to go to the highest court of appeal, just to find out what the claim means. I suppose that, for those paying for the shaping of the law under the UPC, this is the desired result, for it hands over commercil advantage to those litigants who have the deepest pockets (I mean, the biggest litigation budget).
Every litigant with pockets less deep has to settle because they can’t afford to do anything else. This is how the oligarchs use the law to bully everybody else into settling or withdrawing.
This is not the best way to nurture a correctly-performing system of patent law. In England the patents courts have struggled for at least 40 years to provide a financially level playing field when David and Goliath fight it out in court. And at the UPC?
As to conforming the description, US law uses the term definiteness rather than clarity. A claim is indefinite if it is indisputably ambiguous. In the USA, if your duly issued claim is indefinite, it gets revoked. In Europe, not. But thinking about “gathered”, was there ever a clearer case of indefiniteness/want of clarity? How on Earth did the EPO’s ED let that one through to grant?
Never mind any Doctrine of Equivalents, what say you to the UPC construing the claim wide to attack its validity but construing it narrowly when its owner asks for it to be enforced. A sort of “reverse doctrine of equivalents” to deter those who deliberately draft a load of Angora cats?
Dear Max Drei,
I agree with what you say, especially when it comes to a battle before the UPC between big players with deep pockets and other players with less financial means. Even in the patent business money should not be the determining factor.
From your comment on the term definiteness, I understand why the British delegation proposed that Art 84 becomes a ground of opposition when the EPC was set up, and then repeated the proposal during the revision procedure of 2000.
I agree with you when you state “How on Earth did the EPO’s ED let that one through to grant?”. This is the comment I made in my reply to Mr Hagel. Another example is the Agfa/Gucci case before the UPC.
You will most probably not agree with me, but one consequence of G 1/24 should be the necessity to adapt the description to the claims before grant or after maintenance in amended form.
There is no need to define a sort of “reverse doctrine of equivalents”. Just apply the EPC as it stands.
This is, in my opinion, with the EPC as it stands, the only way to nip Angora cats in the bud. And this would clearly allow the same interpretation of the claims before and after grant.
With claims and description aligned on each other, there is no wriggle room left for clever applicants/proprietors. And then big and small players are also on a par.
Well, yes, Daniel, but does there not need to be some way of deterring applicants from drafting deliberately ambiguously? One US judge uttered the warning “Be careful what you ask for” when punishing the patent owner by refusing what the patent owner wanted. What is the deterrent in Europe, if you can’t strike down a claim which slips through to grant with some ambiguity or other in it despite the best efforts of the ED?
Dear Max Drei,
The deterrent is simple: examiners need to be given more time so they can do a proper job. I am not sure that this fits with the president’s view that EDs should work as quickly as possible in order to grant as much as possible in the shortest time possible.
SDs and EDs should be allowed to go back to the roots and be given time to read the description and not just the claims in order to be as quick as possible.
With the statistic search system applied at the EPO the focus goes to the claim wording. Whether the claim wording ties up with what the description says is then secondary.
It is not correct, but as long as on the 10th floor and around the idea persists that examiners should be driven to produce as much as possible “products” in the shortest time possible, the problem will persist.
You said yourself that the ED should not have let “gathered” slip through, but they did so as the description has manifestly not been read and then adapted to the grantable claims. The same was the case in the Agfa/Gucci case.
Mr Hagel,
There is no reason to be disappointed or frustrated,
What is however missing is what should be understood by “consulting” the description.
This is rather vague and like in the case of G 2/21 rather abstract.
With a pinch of salt ,it is possible to claim that merely reading the description, but not taking any conclusion and concentrating on the claims can be considering as having “consulted” the description.
One benefit of G 1/24 could be seen in the necessity of examiners to read the description before searching and examining an application. This is one way of “consulting” the description. This should also be done before granting, but should not lead to amendments forced upon applicants in the communication under R 71(3). It should also apply when examining an opposition. I know for a fact that this might not always be the case. When I used to be an examiner, I always considered necessary to read the description and the claims before any procedural action. This necessity was not shared, already at the time, for efficiency puroposes.
Not merely a limitation only disclosed in the description, but not translated into the claims, as well as a generalisation of limiting claimed features should be tolerated before grant or before deciding maintenance in amended form. This leads to the necessity of a referral on this topic, as foreseen in case EP 2 124 521 B1 (T 697/22).
I therefore disagree with you when you claim that there is no need to adapt the description to remove inconsistencies between the claims as amended and the description. The contrary seems true.
If the ED had done its job properly before grant in the case leading to G 1/24, and in the Agfa/Gucci case, there would not have been the necessity for a referral.
On the contrary, another benefit of G 1/24 could be the necessity to adapt the description to the claims so that the proprietor cannot later try to create at will Angora cats. It is too easy for a applicant/proprietor to attempt to conceal in the description meanings of claimed features which do not tie up with the ordinary meaning of those claimed features.
Claiming that the patent is its own dictionary is a fallacy and should not be tolerated any longer. It is only if the claims and the description are aligned with one each other that the culture of Angora cats can be nipped in the bud.
It is a well ascertained fact that every T decision is case specific, but in spite of this, some continuity in case law is the prerequisite of predictable behaviour of the boards and confidence that the boards are willing to reach a correct decision.
We have seen how in procedural matters the case law of the boards is diverging since the valid RPBA have come into force. If the boards do not want to lose any more credibility, the same should not happen after G 1/24. However, when one sees the very divergent way boards apply G 2/21, the future might then be rather doom and gloom.
Mr Thomas,
You seem to have read one of my comments through a highly distorting lens. I quote my comment :
« Nonetheless, this does not exclude that a requirement for adaptation may be justified, provided the inconsistency is shown to cast doubt on the meaning of claim terms, as laid out in the 2024 revision of the Guidelines. »
I cannot thus understand your comment : « you claim that there is no need to adapt the description to remove inconsistencies between the claims as amended and the description. » Why create a disagreement when there is none ? As far as I am concerned, I am happy when we agree.
On another topic, I agree with you with the need for EDs to read the description and for the management to take this into account in the setting of production objectives. I have understood from my audits of files as a SQAP auditor that this was not always the case, with resulting quality issues esp. as to the quality of the search (e.g. unclaimed features such as a preferred field of use not being taken into account for the scope of the search) and clarity.
The same could be said for another common quality issue, i.e. the lack of attention to PCT search reports issued by non-EPO ISAs.
Such issues have been noted in the SQAP reports published by the EPO, but the need to read the description has not yet been explicitly signalled.
Mr Hagel,
I have not looked at you comment with a distorted lens. I simply consider that before grant and after maintenance in amended form, it is the duty of the EPO to always check whether the description is aligned with the claims.
If there is no need to do so, it goes without saying that there is no necessity to act.
My experience shows however that this is very rarely the case.
I hasten to add that, as soon as an independent claim has been amended, it is extremely rare that the description does not need to be adapted.
When limiting an independent claim with the subject-matter of a dependent claim, or when bringing features from the description into an independent claim, the description needs to be adapted. The same applies when some embodiments are not any longer falling under the allowable independent claim.
I do not say that, when adapting the description to the claims, features should be deleted from the original description, but they cannot be left unamended and therewith give the impression that those embodiments still represent the allowable claim.
I know for a fact that not all examiners read the claims, and if G 1/24 brings the EPO back to the right track, it will at least have been useful for this. It is a pity that this behaviour has been encouraged for production/productivity purposes.
As I regularly look at board’s decisions after opposition, it happens that not only documents of not-EPO ISR are not taken into account, but also documents mentioned in EPO ISR or ESR/SESR are not properly evaluated.
It is however more frequent that highly relevant documents brought forward by opponents are mentioned neither in the non-EPO ISR nor in the EPO ISR or ESR/SESR, whereby they are classified in the classes allegedly searched. When for instance an opponent comes up with relevant prior art under Art 54(3), something went manifestly wrong during the search.
Dear Mr Thomas,
Let’s go back to daily business shall we ?
EPO examiners, I might pretend, have always read, i.e. “consulted”, the description of the applications they were working on.
An application comes up, with a discrepancy, no matter in which Angora cat situation, between the claims and the description. Examiner A “consults” the description, and as a result interprets the claims narrowly. Outcome : grant. Examiner B “consults” the description, and as a result interprets the claims as broad as possible. Outcome : lack of patentability. Duality of outcomes from the same outset.
Another cat then comes to my mind : Schrödinger’s… The outcome of the proceedings depends this time not on whether someone looks, but on who looks if the cat is alive. At least the EBA has this time done nothing to help resolve the situation.
Oh, by the way, the roles of examiners A and B in the above scenario may very well be taken up by the members of the referring Board. They haven’t been helped either.
Wouldn’t a strict requirement of adaptation of the description be the only way out ?
@ Anonymous,
I am much more hesitant than you, and, in view of my experience, cannot allege that examiners are always reading the description. But for the sake of the exercise let’s assume it.
What you explain with examiners A and B is perfectly realistic. Those two possibilities should not happen.
If we want a similar interpretation of claims in pre- and post-grant procedures, there is indeed, at least in my opinion, only one way to insure this: insure at grant a good alignment between claims and description.
There should also be no wriggle-room for a proprietor to come up with an Angora cat in case of infringement. For this purpose a good alignment between claims and description is necessary.
If in T 439/22, the ED had read the description before grant, it should have stumbled over “gathered”. The same applies in the Agfa/Gucci case before the UPC LD Hamburg. Here the proprietor came with an Angora cat.
The role of the EPO is not to produce as many “products” as possible in the shortest time as possible. It is to grant solid patents. Isn’t it what the president of the EPO claimed in its position to the EBA? Back to the roots!
Daniel, I have a favour to ask.
In your most recent reply in this thread you suggest that under the EPC a claim is not to be seen as a “definition” of the invention. I don’t understand where you are coming from. Art 84 EPC announces that the function of a claim is to “define” the “matter” for which protection is sought. Not “describe”. Not “disclose”. Rather: “define”.
But apart from that, of course I do appreciate that the EPC lacks any definition of the word “invention”. Neither does any other patent statute I can recall. With good reason. Who knows what will count as an invention, in the future. But that’s a different matter entirely than whether a patent application for protection of any given unique “matter” (or “invention”) shall contain a definition of that subject matter.
What else but a “definition” is a set of words that “defines”?
What else, other than the “invention”, is the “matter” for which protection is sought?
Must I read Art 84 in French or German to grasp the nuance you have in mind?
Dear Max Drei,
There is no need to resort to Art 84 in French or German to grasp the nuance I have in mind.
There are actually plenty of reasons to decide that the claims do not define the invention.
Under the EPC 1973, a date of filing was only given if at least one claim was filed.
This changed with the EPC 2000.
Under the present R 40 (1,c), it is enough to file a description in order to obtain a date of filing.
R 42(1,c) requires that the description discloses the invention, albeit as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood.
According to R 43(1), the claims shall define the matter for which protection is sought in terms of the technical features of the invention.
In combination with Art 84, the logical conclusion is thus that the claims do not define the invention, but the protection thought. That claims and description relate to an invention is not at stake, but the claims do not, as such, define the invention. The invention is what is disclosed in the description.
I would also like to refer to Art 83: “The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. You know as well that only stating that a claim offends Art 83 is, in general, not enough, as it is the whole disclosure of the invention which has to be taken into account.
An objection under Art 83 only aimed at a claim, is more than often, nothing more than a hidden clarity objection in opposition.
Did I manage to convince you?
At least you did not manage to convince me that the claims define the invention, whatever one might understand under “define”.
Fascinating answer, Daniel. Thank you for drawing attention to the different wording of Rules 42 and 43.
In a piece of legislation, the general rule is that if the words are different, then the meaning must be different. I can see that a description might describe a plurality of different “inventions” whereas the job of the claim is to “define” a “matter”. However, to be acceptable, the application must “relate” to a single inventive concept. What do EPO Examiners look at, when examining for compliance with the “inventive concept” requirement of Art 82. If objection arises, under Art 82 EPC, with what words does the Examiner express that objection to the presence of more than one inventive concept? Is any such objection made only against the description? Or is the objection made with reference to the claims?
i think I can understand and admire the drafters of the EPC, in their choice of words for Rules 42 and 43. I think of the multitude of literature on the theme of “disclosed but not claimed”. But for me, just because a claim is that which defines the matter for which protection is sought does not unassailably prove in logic that such a claim fails to define an “invention”.
But never mind. If I haven’t convinced you perhaps we can, once again, agree to differ.
Dear Max Drei,
On a literal interpretation of Art 82, you are right in that the application must “relate” to a single inventive concept.
However, this does not hinder applicants to bring in one and the same application different inventions.
When teaching about unity, I have a good example of non-unity a priori. The application discloses at the same time a locomotive and an after shave for the locomotive driver. There is thus a link between the two, but you will certainly agree that there is a potential lack of unity.
If the applicant files two different independent claims for protecting at the same time the locomotive and the after shave, then there is a manifest lack of unity. If the applicant only claims protection for the locomotive or for the after shave, then there is no lack of unity, but as a consequence the description must be limited to what is actually claimed, i.e. either protection for the locomotive or for the after shave. So we are back on the necessity of adapting the description….
If the description allows to combine the locomotive and the after shave, then a single claim will be allowed combining protection at the same time for the locomotive and the after shave.
As there is no synergy between the locomotive and the after shave, the lack of inventive step might be argued with partial problems.
Therefore EPO Examiners look at the claims to determine whether there is a single “inventive concept” as required in Art 82.
The description will only be objected to once the applicant will decide which claim should go to grant.
I would also like to refer to R 44. Unity of invention is only given if there are no “special technical features” which define a contribution over the prior art for each of the claimed inventions considered as a whole.
When for in instance a broad claim, covering a series of variants, is not allowable for lack of novelty and/or inventive step, then there are no “special technical features” which define a contribution over the prior art for each of the claimed inventions considered as a whole. The application must be divided and the scription adapted accordingly.
As a simple example the claim relates for example to “means for linking two pieces of machinery together”. Various variants are possible: glue, screws (or nuts and bolts), snap fit, soldering etc. A piece of prior art discloses rivets. The general claim to “means for linking two pieces of machinery together” is not any longer allowable, and hence each variant becomes autonomous and the whole application has to be divided. Here again, what matters are the claims, not the description. Only after division, the description will have to be adapted.
You still have not managed to convince me that the claims represent the invention.
I know that I am hard to convince. This might be due to my family name. ;-))
I think we should nevertheless agree that we disagree on this point, as well as on the necessity of adapting the description once the wording of the claim is finalised.
Agreed, Daniel. Loved the reference to your family name.
I would refer you to section 125 of the UK act.
So what? Section 125 of the UK act manifestly differs from the EPC which does not define directly and unambiguously what is an invention.
Contracting states to the UPC are free to decide what they want, but this does not have any influence on the EPO.
Your comment does not bring anything forward.
I believe, I may be wrong, Anonymous merely meant S125 (below) of the UK Patents Act is an an example of a patents law that does include a definition of invention, nothing more.
125 Extent of invention.
(1)For the purposes of this Act an invention for a patent for which an application has been made or for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly.
(2)It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority date under section 5 above.
(3)The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection (1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article.
@J
Thanks for giving me the full text of Section 125.
If you thought I had not “consulted” it, you were, alas, wrong.
I carefully looked at it and this explains my reply to Anonymous, which I do not see a reason to change my position.
There might be an exception in the UK, but this exception confirms the rule.
Art 84 EPC does not defines the invention, but this does not hinder a contracting state to say differently and therewith give its judiciary an indicationon how an invention can be defined.
You seem from my perspective to assume the worst of people. I was by no means suggesting you had not consulted it. I pasted in the text merely for ease of reference for other readers, i.e. in an attempt to be helpful. Anonymous was I believe just giving an example, where is the harm in that? There is no need to jump down people’s throats.
@J
Thanks for giving me the full text of Section 125.
If you thought I had not “consulted” it, you were, alas, wrong.
I carefully looked at it and this explains my reply to Anonymous, which I do not see a reason to change my position.
There might be an exception in the UK, but this exception confirms the rule.
Art 84 EPC does not defines the invention, but this does not hinder a contracting state to say differently and therewith give its judiciary an indicationon how an invention can be defined.
@ J, in reply to your comment of 03.07.2025
I am not getting at people’s throats.
I actually found your comment unhelpful.
If people want to know what is in Section 125, they can look it up by themselves.
The whole discussion in this threat should be about G 1/24, and not about sidelines.
Art 84 EPC does not define an invention. It is not my invention (sorry for the pun). It is the view of the legislator.
G 1/24 has made clear that the description has to be always consulted and not only if a claim, which defines a scope of protection in technical terms, is unclear.
The part of Art 84 which was aimed at by the EBA is the part “clarity”. It remained silent on the other part of Art 84, support by the description.
This is why I consider that the upcoming of a referral on the adaptation of the description seems important, as this is about the second part of Art 84, “support”.
The discussion all stems from the fact that it is unfortunate that such an important term, which is central to much of the EPO’s case law, is not defined when it could have been.
You originally said “I invite to look at any patent law valid in Western Europe and to tell me in which of those the term invention is defined.”
I did this and you claim that “Your comment does not bring anything forward” even though it was a direct reply to your invitation.
I told you what you wanted but now you find the comment “unhelpful”.
Supposedly “this exception confirms the rule”. Maybe you were just wrong and do not like it.
Nobody claimed that the EPO should follow UK law, so this comment is a strawman: “Section 125 of the UK act manifestly differs from the EPC which does not define directly and unambiguously what is an invention. Contracting states to the UPC are free to decide what they want, but this does not have any influence on the EPO”. Nobody claimed it should have any influence on the EPO.
J is correct about you assuming the worst and jumping down people’s throats. Your dislike of UK law has once again reared its head.
@ Anonymous of July 3d
The tone of the comment reminds me of a “good friend of mine”: Proof of the Pudding, but I accept that I could be wrong.
The whole discussion about Art 84 stems from an aside of Max Drei, and has actually little to do with G 1/24, as the EBA made clear that the description has to be consulted before deciding that a claim is unclear. This is one positive effect which can be expected from this decision.
It is a matter of fact that nowhere in the EPC there is a definition of what is to be understood by an invention. That in Section 125 of the UK act there has been an attempt to define an invention is good for the UK. But it is to no avail to the EPC. This is also a matter of fact. To be honest, Section 125 is not a model of clarity.
In my humble opinion, an invention is a technical solution to a technical problem and solves said technical problem by producing a technical effect. See headnote of G 1/19.
Said technical solution has to be translated in claims, which should therefore contain all the necessary means allowing to achieve said technical effect. Therefore claims do not define an invention but a territory which has not to be trespassed by third parties.
You can argue that “technical” is neither defined under the EPC. But case law of the boards has clarified the situation in this respect.
I am actually indifferent to UK law, as it is of no concern to me. I have thus no reason to dislike UK law.
I have however criticised the UKSC Actavis decision in which Lord Neuberger, seconded later by Sir Robin Jacob, criticised the examiner for having raised an objection under Art 123(2) against a general claim to pemetrexed, whereas the whole description only disclosed a specific salt of it. With due respect to this persons, I consider that they were “plainly wrong” to use the wording of Sir Robin Jacob approved by Lord Neubauer.
I would also like to remind Anonymous and all other commenters that the present blog, contrary to the majority of blogs, is a blog in which the comments are published without any approbation, but this could change.
I will not hesitate, and I have already done it, to delete comments which are, in my view incorrect.
At the same time, I will not be obliged to accept corrections, when I consider that those are not justified.
The person I am aiming at, will cetainly recognise itself.
Daniel, the mention of my name prompted me to go back and read again your earlier answer on the issue of whether a claim “defines” an invention. I think we agree (hooray) that claim “defines” something, namely, the “matter” for which protection is sought.
As to that “matter” I asked you what else but “the invention” it could be. You chose not to answer that question, which is your perfect right, instead offering:
“….. the logical conclusion is thus that the claims do not define the invention, but the protection thought.” Obviously, in that, your”thought” was supposed to be “sought”.
I failed to follow the inevitability of your logical thought. I was left unpersuaded, and still of the view that “matter for which protection is sought” is just another way of identifying that subject matter which is recognised by the EPO as a patentable invention, and is the subject of the patent application under consideration.
But never mind. Nothing hangs on our difference of understanding. There are good reasons why a patent statute does not attempt to define what the word “invention” means (or, for that matter, the word “technical” or “objective” or “problem” or “obvious”)
@DXThomas & MaxDrei
Recent decisions address the question of the meaning of « essential features », which in my view has some bearing on your discussion about the meaning of the « invention » under the EPC.
T 0602/24 (Reasons 2.2 – 2.4). Excerpts :
“An analysis of the decisions cited in these parts of the CLBA shows that the term “essential features” is not accorded a uniform meaning in case law. »
” Since, under Article 84 EPC, the claims define the matter for which protection is sought (“l’objet de la demande pour lequel la protection est recherchée”), i.e. the subject-matter formulated by the applicant for which a European patent is sought, the essential features of the invention must, according to Rule 43(3) EPC, be those which the applicant considers to be essential for the patent protection sought and not those which the examining division considers sufficient to satisfy substantive requirements.”
T 1535/23 (Reason 1.4) states along the same line that the « essential features » must be determined on the basis of the application as filed. It is to be noted that the Board’s analysis relies both on the claims of the original application and on the description.
Mr Hagel,
An invention is a technical solution to a technical problem and solves said technical problem by producing a technical effect.
See headnote of G 1/19.
Said technical solution has to be translated in claims, which should therefore contain all the necessary means allowing to achieve said technical effect.
You might have overlooked the fact that I had commented T 602/24 in the present blog.
The position of the board in T 602/24, that it is primarily the applicant which has to decide what is essential is to be followed.
However, there are also cases in which the essential features when reading the description are not to be found in the claims.
In such a situation, an objection of lack of essential features has to be raised.
A blog on T 1535/23 will be published on July 7th. T 1535/23 reminds that a feature might not be disclosed as essential in the description, but if this feature is present in all embodiments of the invention disclosed in the description, then this feature is de facto essential.
A good representative should never use the word essential in a description, but the features needed to obtain the technical effect of the invention, ought to be mentioned in the claims.
Mr Thomas,
I fully agree with your conclusion. As a representative in an in-house position, I have always kept away from labelling a feature as « essential » in the description, and instructed the same to the firms to which I farmed out the drafting of applications to do the same. For various reasons, the claims may have to be modified incl. broadened, and defining features as essential in the description gets in the way of the desirabele flexibility.
I look forward to reading your comments on T 1535/23.
Mr Hagel,
Thanks for your comment.
I would however like to stress that any feature mentioned in an independent claim, even at filing, has to be considered as essential.
The independent claim as filed might be broadened, but this depends on the description as filed.
Broadening an independent claim will always be checked against the requirements of Art 123(2), whereby G 2/10 or the novelty test applies. In opposition Art 123(3) applies as well.
In first instance, the old “essentiality-test”, now the “three point test”, cf. Guidelines H-V, 3.1, can still be used. Applied correctly its result is in conformity with G 2/10.